INDUSTRIAL DESIGN PROTECTION ACT
SYNOPSIS
1. REGISTRABLE DESIGN
A design is a two-dimensional or three-dimensional solution of the appearance of a product.
Design may have variants. The variants of a design are such modifications of it that produce the same overall impression on a person skilled in the art.
A design set is a logical collection of designs belonging to the same class according to the Locarno Agreement.
Criteria of registrability - a design shall be worldwide novel, have individual character and enable to manufacture products of industry or handicraft.
2. EXCLUDED FROM THE PROTECTION
Legal protection shall not be granted to the following designs:
1) designs that serve solely to obtain a technical result;
2) designs contrary to good customs;
3) unstable designs;
4) layout-design of integrated circuits;
5) designs that constitute the spare parts or components of a product and, being assembled into it, fail to remain outwardly visible in the normal use of the product.
3. APPLICANT
The author (designer), assignee or their legal successor. Assignment of the design from the designer to the assignee may be executed prior to filing the application.
4. FILING
The applicant may file an application and arrange matters connected with the applying for and maintaining of the registration independently or through a patent attorney.
An applicant residing or located outside Estonia may file an application himself or through a patent attorney. Further matters connected with the applying for design registration and the maintaining of the registration shall be arranged solely through a patent attorney.
Applying for a design registration is accompanied with the payment of the state fee. Each variant of the design beyond the second is subject to an additional state fee.
5. EXAMINATION
Formal examination - compliance of the application filed with the formal requirements (presence of all the obligatory documents, payment of the state fee, presence of the necessary signatures, etc.).
The decision of the Patent Office on refusal to process the application or on refusal of design registration may be appealed by the applicant through the Board of Appeal, the decision of the latter - through court.
6. GRANTING
If the design applied for belongs to the area of the registrable one and the necessary formal requirements are met, the design will be registered in the Register.
7. PROTECTION
The registration of a design is effective within five years from the date of filing. The registration may be renewed twice upon payment of the renewal fee - firstly for five years and once more for five years.
No annuities are provided.
8. EXCLUSIVE RIGHT OF THE OWNER OF DESIGN
The owner of design enjoys full legal power (exclusive right) over a registered design.
During the term of design registration the owner of design shall have the right to prohibit other persons, without his consent, from manufacturing products according to an identical or confusingly similar design and from distributing, selling and offering for sale or importing, exporting and storing for the aforementioned purpose products which are manufactured according to the registered design.
9. THE ACTIONS NOT INFRINGING THE EXCLUSIVE RIGHT
The following proceedings shall not be considered as infringement of the rights of the owner of design:
1) the use of the design in the construction or accessories of aircraft, water or land vehicles registered in other states, when those vehicles temporarily or accidentally sojourn in the territory of Estonia;
2) the import into Estonia of spare parts and additional devices manufactured according to the design with the purpose of repairing the aircraft and vehicles mentioned in item 1;
3) the private non-commercial use of the design;
4) the non-commercial use of the design for teaching purposes provided that the owner of the design has been referred to and the use does not infringe his interests;
5) the use of the design in experiments concerning the design itself;
6) the use in accordance with the right of prior use.
10. EXHAUSTION OF RIGHTS
The distribution, selling or offering for sale, or the import, export or storing for the aforementioned purposes of products manufactured according to the design and put into circulation by the owner of design or with his consent do not infringe the exclusive right of the owner of design.
As no territory is included in the above wording, it has to be concluded that the Estonian legislator follows the principle of the full international exhaustion in design matters.
11. POST-GRANT ACTIONS
Assignment has to be recorded in the Estonian Register of Designs.
Recordal of a licence agreement is not obligatory but recommendable whereas:
a) the unregistered licence agreement is not valid against third parties;
b) upon the collision of rights transferred to several licensees by different licences, the prerogative shall belong to the licensee whose licence has been registered in the Register.
Prior use right: any person who, prior to the filing of a registration application by another person, used an identical or confusingly similar design in Estonia in good faith and irrespectively of the applicant , or has made significant arrangements for its use, may continue to use the design in the same manner or may start using to use it in the intended manner.
Use of the registered design is not compulsory. Use conditions are producing, importation, exportation, sale, offering for sale. Publication of an advertisement or an offer to license are not considered being use.
No sanctions ex officio in the case of non-use. No compulsory licence are provided.
Infringements of the rights of the owner of the design are handled by Estonian courts. Liability of the infringer may be civil or criminal. Civil liability includes also compensation for damages.
